General Terms of Engagement of the law firm KIMPFBECK,
Rindermarkt 17, 85354 Freising (hereinafter referred to as “Patent Attorney”).
The Patent Attorney will carry out any present and
future engagements entered into by him on the following terms:
I. Professional fee
The Patent Attorney will charge fixed fees for
standard services in accordance with the applicable schedule of fees and
charges, including in particular fees for the assumption of representation,
filing of IP rights, filing of applications and payment of annual fees or
renewal fees. Otherwise, the Patent Attorney shall charge for services rendered
on an hourly basis in order to appropriately reflect the difficulty, scope and
economic significance of the engagement.
II. Subject matter of legal advice and representation
1. Fields of law
The Patent Attorney’s legal advice and representation
relates exclusively to the law relating to obtaining and to the legal validity
of industrial property rights in Germany and before the European Patent Office,
the EUIPO and the WIPO. Tax advice and/or representation is not owed. If the
legal matter concerns laws of other countries, the Patent Attorney shall refer
to this fact in due time. The client shall consult a competent third party
(e.g. tax lawyer, tax adviser, auditor) to ascertain the tax implications of
civil law arrangements.
2. Scope of engagement
The subject matter of the engagement shall be the
agreed service, not any specific legal or economic success.
3. Letter of engagement
Letters of engagement and enquiries shall not be
deemed to have been delivered until the Patent Attorney has confirmed receipt.
The Patent Attorney shall declare promptly whether he accepts or rejects the
engagement. The verification of the completeness and correctness of documents
handed over to the Patent Attorney shall be part of the engagement if this has
been expressly agreed upon. Searches for any prior rights, prior art,
previously known design corpus or prior trademarks and business designations
shall only be carried out upon explicit instruction.
The Patent Attorney is entitled to consult expert
third parties (colleagues) in carrying out the engagement, in particular,
freelancers, patent engineers, searchers, cooperating lawyers and patent
attorneys, lawyers for handling IP right infringements, foreign lawyers and
patent attorneys for representation before foreign authorities or courts. Any
expenses arising therefrom shall be agreed upon with the client in good time.
5. The Patent Attorney will only initiate the filing
of appeals or legal remedies after having been specifically mandated to do so.
III. Obligations of the Patent Attorney
1. Legal review
The Patent Attorney is obliged to conduct the
engagement diligently. He shall appropriately notify the client about the
results of his activities to the extent requested in each case.
The Patent Attorney is bound by professional secrecy.
This obligation relates to anything which the client confides to him or which
otherwise becomes known to him as part of the engagement. In this respect, the
Patent Attorney has a right to refuse to testify. The Patent Attorney may only
disclose the existence of an engagement and any information in connection with
the engagement to third parties, in particular authorities, if the client has
previously released him from his obligation of secrecy.
3. Custody of funds
The Patent Attorney shall hold any funds received on
behalf of the client in trust and – subject to clause IV. 7 of these Terms –
pay them out without undue delay at the written request of the client to the
recipient designated by the client.
4. Data protection
The Patent Attorney shall take all proportionate and
reasonable precautions against loss of and access by unauthorised third parties
to the client’s data and shall continuously adapt them to the proven state of
the art for the time being.
IV. Obligations of the client
In order to ensure proper and successful handling of
the engagement, the client shall have the following obligations:
1. Provision of information
The client shall inform the Patent Attorney
comprehensively and truthfully about all facts related to the engagement and
shall provide him with all documents and data related to the engagement in an
organised manner. During the term of the engagement, the client shall only
contact courts, authorities, the opposing party or other parties in
consultation with the Patent Attorney.
The client shall inform the Patent Attorney
immediately of any change of address, telephone or fax number, email address, etc.,
and also of any long-term physical absence or other circumstances which justify
the client being temporarily not contactable. The client shall be solely liable
for any damage incurred by the client by failure to communicate a change of
2. Careful examination of letters from the Patent
The client shall immediately and carefully check the
Patent Attorney’s letters and submissions, drafts of which are sent to the
client in advance by the law firm, for correctness and completeness. The client
shall then promptly inform the Patent Attorney whether the letters and
pleadings as submitted to the client can be sent to third parties. If the
client does not reply within a reasonable period of time, the Patent Attorney
will assume that the client consents.
3. Storage and processing of client data
The Patent Attorney is entitled to record, store and
process the client’s data entrusted to him within the scope of the engagement,
using data processing systems. The client’s data, in particular, personal data,
shall be processed in the following applications in compliance with the GDPR:
Continux (file and deadline management), Teamdrive (data backup), Starbuero
(administration), United Domains (website hoster, email server), Sipgate
(telephone system, fax), Lexoffice (accounting), PAVIS (annual fees, EP validations), Arcano (secure file transfer)
and Clarivate (EP validations, PCT nationalisations).
4. Notifying the client by fax
If the client informs the Patent Attorney of a fax
number, the client agrees, until further notice or until expressly otherwise
instructed, that the Patent Attorney may send client-related information to it
via this fax number without any restrictions. The client warrants that only the
client or persons authorised by it have access to the fax machine and that the
client regularly checks for incoming faxes. The client shall inform the Patent
Attorney if any restrictions exist, for example, if the fax machine is not
regularly checked for incoming faxes or if incoming fax transmissions are only
requested after prior notification.
5. Notifying the client by email
If the client notifies the Patent Attorney of an email
address, the client at any time revocably agrees that the Patent Attorney may
send engagement-related information to the client by email without
restrictions. In all other respects, clause IV. 4 of these Terms shall apply
accordingly. The client is aware that only a limited degree of confidentiality
can be guaranteed for unencrypted emails. If the client meets the technical
requirements for the use of signature and encryption procedures and wishes to
use such procedures, the client shall inform the Patent Attorney thereof. The
Patent Attorney provides a public PGP key for this purpose on his website
6. Payment obligation of the client; assignment
The client is obliged to pay reasonable advances at
the Patent Attorney’s request, and the Patent Attorney’s full remuneration no
later than upon completion of the engagement. This shall also apply if there
are claims for reimbursement of costs against the opposing party or third
parties. The client shall assign to the Patent Attorney all claims for
reimbursement of costs by the opposing party or other third parties in the
amount of the Patent Attorney’s claim for fees. The Patent Attorney accepts the
assignment. The Patent Attorney is entitled to set off incoming payments
against outstanding fee claims, also from other matters.
7. File retention and destruction
The client is hereby advised that the Patent
Attorney’s reference files, with the exception of the costs file and any
enforceable instruments, will be destroyed after six years unless the client
collects such files from the Patent Attorney’s office before that time. The
said period commences at the end of the year in which the engagement ended
(section 44 (1) PAO (German regulations governing patent attorneys). In all
other respects, section 44 (2) sentence 2 PAO (German regulations governing
patent attorneys) shall apply.
8. Renewal of IP rights
The Patent Attorney will remind the client in due time
about the renewal of the IP right or the payment of annual fees. The reminder
will be sent to the address last indicated by the client. The client shall, if
it wishes to maintain the IP right, give the Patent Attorney a timely
engagement for renewal, even if the client has not received a reminder from the
Patent Attorney to renew the IP right or pay the annual fee required. If the
client does not respond to a reminder about renewal or about the payment of
annual fees, or if the client is not contactable at the address last indicated,
the Patent Attorney will assume that the client does not wish to renew the IP
right and will not pay any annual fees or renewal fees.
IV. Liability and limitations of liability
The liability of the Patent Attorney arising from the
contractual relationship between him and the client for compensation for damage
caused by simple negligence is hereby limited to € 1 million (Section 45b (1)
No. 2 PAO). This limitation of liability shall not apply in the event of gross
negligence or intentional causation of damage, nor shall it apply to liability
for culpably caused damage due to injury to the life, body or health of a
person. The patent attorney has taken out a pecuniary damage liability
insurance which covers € 1 million per insured event (maximum € 4 million per
insurance year). If the client wishes to insure a liability exceeding this
amount, there is the possibility of an additional insurance for each individual
case, which can be taken out at the request and expense of the client.
V. Final provisions
1. Application of this agreement to future engagements
The above Terms of Engagement shall also apply to
future engagements, unless otherwise agreed in writing.
2. Applicable law, place of performance
The engagement shall be governed exclusively by the
laws of the Federal Republic of Germany. The place of performance for all
services rendered in connection with the engagement is Freising, Germany.
3. Place of jurisdiction
If the client is a merchant, a legal entity under
public law or a special fund under public law, Freising, Germany, is agreed as
the exclusive place of jurisdiction for all claims arising from or on the basis
of the engagement. The same applies to persons who do not have a general place of
jurisdiction in Germany or persons who have relocated their place of residence
or habitual abode outside of Germany after the engaging the Patent Attorney or
whose place of residence or habitual abode is not known at the time the action
Any modifications and amendments to these Terms of
Engagement shall be made in writing and shall be explicitly identified. This
also applies to any waiver of the written form requirement.
5. Severability clause
Should any provision be legally ineffective, the legal
effectiveness of the remaining provisions shall remain unaffected thereby. The
parties to the agreement undertake to replace an ineffective provision with an
effective provision which comes closest to it in terms of the economic result
and best serves the purpose of the agreement.
As at 30 April 2022